itDRP on bulgarireplica.it: brief focus on the word “replica”
Bulgari SpA was notified that the domain bulgarireplica.it, registered by an Italian national, was used to refer to a website where visitors could purchase identical copies of jewelry creations.
It must be admitted that the legal qualification of “counterfeit” does not apply to all “replicas”. However, experience has shown that using the word “replica” in the digital environment is less intended for aesthetes passionate about jewelry, watchmaking, or leather goods than consumers searching for counterfeit goods. In this regard, data from Google Trends indicates that searches for the word “replica” are steadily declining.
Nevertheless, it is too early for brand owners to lower their guard given that searches for the word “replica” remain frequently associated with specifc products (watches, bags) or luxury brands (Louis Vuitton, Rolex, Gucci).
These data also reveal Italian Internet users’ strong interest in the word “replica” since they are placed in the second position behind Romanian Internet users. Hence, it is crucial for Bulgari to monitor the use of its brand in the digital space and initiate legal proceedings to put an end to any form of illegal use.
Finally, composing a domain name reproducing a trademark appended to words such as “replica” or “fake” remains frequent. Case law provides numerous examples that are not sufficient to express the extent of the phenomenon on their own.
As the examples taken from case law show, it is not uncommon for the domain name in dispute to be used to sell goods suspected of being counterfeits. bulgarireplica.it was only one of them. Indeed, according to the panelist, the snapshots made by Archive.org confirmed the reality of the offer for the sale of copies of several creations of Bulgari (CRDD, Bulgari SpA v. Gaetano Pierro , 18 maggio 2021).